Ashland Licensing & Intellectual Property LLCv.Sunpoint International Group USA Corp.

Trademark Trial and Appeal Board

Jun 7, 2013

No. 92057294 (T.T.A.B. Jun. 7, 2013)

Mailed: June 7, 2013

Cancellation No. 92057294
Registration No. 3450454, 3454800

SUNPOINT INTERNATIONAL GROUP USA CORP
2380 SW 80 CT
MIAMI, FL 33155 UNITED STATES

Ashland Licensing & Intellectual
Property LLC

v.

Sunpoint International Group USA
Corp.

VERNON F VENNE
ASHLAND LICENSING & INTELLECTUAL PROPERTY LLC
3499 BLAZER PARKWAY
LEXINGTON, KY 40509 UNITED STATES

Amy Matelski, Paralegal Specialist:

A petition to cancel the above-identified registration has been filed.
A service copy of the petition for cancellation was forwarded to
registrant (defendant) by the petitioner (plaintiff). An electronic
version of the petition for cancellation is viewable in the electronic
file for this proceeding via the Board's TTABVUE system:
http://ttabvue.uspto.gov/ttabvue/.

Proceedings will be conducted in accordance with the Trademark Rules of
Practice, set forth in Title 37, part 2, of the Code of Federal
Regulations ("Trademark Rules"). These rules may be viewed at the
USPTO's trademarks page: http://www.uspto.gov/trademarks/index.jsp. The Board's
main webpage (http://www.uspto.gov/trademarks/process/appeal/index.jsp) includes
information on amendments to the Trademark Rules applicable to Board
proceedings, on Alternative Dispute Resolution (ADR), Frequently Asked
Questions about Board proceedings, and a web link to the Board's manual
of procedure (the TBMP).

Plaintiff must notify the Board when service has been ineffective,
within 10 days of the date of receipt of a returned service copy or the
date on which plaintiff learns that service has been ineffective.
Plaintiff has no subsequent duty to investigate the defendant's
whereabouts, but if plaintiff by its own voluntary investigation or
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Cancellation No. 92057294

2
through any other means discovers a newer correspondence address for the
defendant, then such address must be provided to the Board. Likewise,
if by voluntary investigation or other means the plaintiff discovers
information indicating that a different party may have an interest in
defending the case, such information must be provided to the Board. The
Board will then effect service, by publication in the Official Gazette
if necessary. See Trademark Rule 2.118. In circumstances involving
ineffective service or return of defendant's copy of the Board's
institution order, the Board may issue an order noting the proper
defendant and address to be used for serving that party.

Defendant's ANSWER IS DUE FORTY DAYS after the mailing date of this
order. (See Patent and Trademark Rule 1.7 for expiration of this or any
deadline falling on a Saturday, Sunday or federal holiday.) Other
deadlines the parties must docket or calendar are either set forth below
(if you are reading a mailed paper copy of this order) or are included
in the electronic copy of this institution order viewable in the Board's
TTABVUE system at the following web address: http://ttabvue.uspto.gov/ttabvue/.

Defendant's answer and any other filing made by any party must include
proof of service. See Trademark Rule 2.119. If they agree to, the
parties may utilize electronic means, e.g., e-mail or fax, during the
proceeding for forwarding of service copies. See Trademark Rule
2.119(b)(6).

The parties also are referred in particular to Trademark Rule 2.126,
which pertains to the form of submissions. Paper submissions, including
but not limited to exhibits and transcripts of depositions, not filed in
accordance with Trademark Rule 2.126 may not be given consideration or
entered into the case file.

As noted in the schedule of dates for this case, the parties are
required to have a conference to discuss: (1) the nature of and basis
for their respective claims and defenses, (2) the possibility of
settling the case or at least narrowing the scope of claims or defenses,
and (3) arrangements relating to disclosures, discovery and introduction
of evidence at trial, should the parties not agree to settle the case.
See Trademark Rule 2.120(a)(2). Discussion of the first two of these
three subjects should include a discussion of whether the parties wish
Time to Answer 7/17/2013
Deadline for Discovery Conference 8/16/2013
Discovery Opens 8/16/2013
Initial Disclosures Due 9/15/2013
Expert Disclosures Due 1/13/2014
Discovery Closes 2/12/2014
Plaintiff's Pretrial Disclosures 3/29/2014
Plaintiff's 30-day Trial Period Ends 5/13/2014
Defendant's Pretrial Disclosures 5/28/2014
Defendant's 30-day Trial Period Ends 7/12/2014
Plaintiff's Rebuttal Disclosures 7/27/2014
Plaintiff's 15-day Rebuttal Period Ends 8/26/2014
Cancellation No. 92057294

3
to seek mediation, arbitration or some other means for resolving their
dispute. Discussion of the third subject should include a discussion of
whether the Board's Accelerated Case Resolution (ACR) process may be a
more efficient and economical means of trying the involved claims and
defenses. Information on the ACR process is available at the Board's
main webpage. Finally, if the parties choose to proceed with the
disclosure, discovery and trial procedures that govern this case and
which are set out in the Trademark Rules and Federal Rules of Civil
Procedure, then they must discuss whether to alter or amend any such
procedures, and whether to alter or amend the Standard Protective Order
(further discussed below). Discussion of alterations or amendments of
otherwise prescribed procedures can include discussion of limitations on
disclosures or discovery, willingness to enter into stipulations of
fact, and willingness to enter into stipulations regarding more
efficient options for introducing at trial information or material
obtained through disclosures or discovery.

The parties are required to conference in person, by telephone, or by
any other means on which they may agree. A Board interlocutory attorney
or administrative trademark judge will participate in the conference,
upon request of any party, provided that such participation is requested
no later than ten (10) days prior to the deadline for the conference.
See Trademark Rule 2.120(a)(2). The request for Board participation
must be made through the Electronic System for Trademark Trials and
Appeals (ESTTA) or by telephone call to the interlocutory attorney
assigned to the case, whose name can be found by referencing the TTABVUE
record for this case at http://ttabvue.uspto.gov/ttabvue/. The parties should
contact the assigned interlocutory attorney or file a request for Board
participation through ESTTA only after the parties have agreed on
possible dates and times for their conference. Subsequent participation
of a Board attorney or judge in the conference will be by telephone and
the parties shall place the call at the agreed date and time, in the
absence of other arrangements made with the assigned interlocutory
attorney.

The Board's Standard Protective Order is applicable to this case, but
the parties may agree to supplement that standard order or substitute a
protective agreement of their choosing, subject to approval by the
Board. The standard order is available for viewing at:
http://www.uspto.gov/trademarks/process/appeal/guidelines/stndagmnt.jsp. Any party
without access to the web may request a hard copy of the standard order
from the Board. The standard order does not automatically protect a
party's confidential information and its provisions must be utilized as
needed by the parties. See Trademark Rule 2.116(g).

Information about the discovery phase of the Board proceeding is
available in chapter 400 of the TBMP. By virtue of amendments to the
Trademark Rules effective November 1, 2007, the initial disclosures and
expert disclosures scheduled during the discovery phase are required
only in cases commenced on or after that date. The TBMP has not yet
been amended to include information on these disclosures and the parties
are referred to the August 1, 2007 Notice of Final Rulemaking (72 Fed.
Reg. 42242) posted on the Board's webpage. The deadlines for pretrial
disclosures included in the trial phase of the schedule for this case
also resulted from the referenced amendments to the Trademark Rules, and
also are discussed in the Notice of Final Rulemaking.

The parties must note that the Board allows them to utilize telephone
conferences to discuss or resolve a wide range of interlocutory matters
Cancellation No. 92057294

4
that may arise during this case. In addition, the assigned
interlocutory attorney has discretion to require the parties to
participate in a telephone conference to resolve matters of concern to
the Board. See TBMP § 502.06(a) (2d ed. rev. 2004).

The TBMP includes information on the introduction of evidence during the
trial phase of the case, including by notice of reliance and by taking
of testimony from witnesses. See TBMP §§ 703 and 704. Any notice of
reliance must be filed during the filing party's assigned testimony
period, with a copy served on all other parties. Any testimony of a
witness must be both noticed and taken during the party's testimony
period. A party that has taken testimony must serve on any adverse
party a copy of the transcript of such testimony, together with copies
of any exhibits introduced during the testimony, within thirty (30) days
after the completion of the testimony deposition. See Trademark Rule
2.125.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and
(b). An oral hearing after briefing is not required but will be
scheduled upon request of any party, as provided by Trademark Rule
2.129.

If the parties to this proceeding are (or during the pendency of this
proceeding become) parties in another Board proceeding or a civil action
involving related marks or other issues of law or fact which overlap
with this case, they shall notify the Board immediately, so that the
Board can consider whether consolidation or suspension of proceedings is
appropriate.

ESTTA NOTE: For faster handling of all papers the parties need to file
with the Board, the Board strongly encourages use of electronic filing
through the Electronic System for Trademark Trials and Appeals (ESTTA).
Various electronic filing forms, some of which may be used as is, and
others which may require attachments, are available at http://estta.uspto.gov.